Star Trek Science Now
Available: 3D Printing as the next Disruptive Technology and its Effects on
Intellectual Property Law

I.
Introduction

From
wireless phones to touch screen computers, Hollywood over the years has
provided a glimpse of technology’s future.Who would have known that the science fiction of Star Trek’s replicator
is gradually turning into science fact with the advent of 3D printing?Hidden behind the scenes of the rapid
advancement of technology is the evolution of IP Law that is continuously being
tinkered with great minds.The
progression of the legal landscape provides a clue to future IP law as
technologies catch up to people’s fantasies.

The
3D creation possibilities are limitless from printing an existing human jawbone[1]
to the Penrose triangle.[2]Human imagination has no bounds, and
with 3D printing, the objects created will soon have no bounds.3D printing as the next disruptive
technology will forever change IP law, therefore, it is important to examine
the legal effects of past disruptive technologies to identify 3D printing legal
challenges and understand how to balance between expanding commons and
encouraging innovation.

II. 3D
Printing Technology Current Capabilities

3D
printing, as the name suggests, allows a home user to produce tangible, 3D
objects.[3]Prior to producing a 3D print, a
computer-aided design (“CAD”) file is generally required.[4]A CAD file can be created from scratch,
from a prior 3D scan of an existing object, or from an improved 3D scan of an
existing object.[5]

3D
scanning plays an important role in producing many 3D prints.A 3D scan is generated by skimming a
laser around a 3D object to capture its contour details and creates a CAD file
upon completion of the scan.[6]Current 3D scanning technology even
allows scans to be made from a smartphone.[7]

Once
a CAD file is ready for print, the file is sent to the 3D printer and the
contents are “sliced” into layers to be printed.[8]There are several different types of
printers.In general, however, similar
to a 2D printer, a 3D printer disperses ink based on “sliced” information of a
CAD file and builds an object layer by layer.[9]The “ink” can be anything from metal, plastic, powder, to a rubber-like substance.[10]Finally, the layers are fused
together and solidified to create the object.[11]

a.
Advantages of 3D printing

3D
printing provides for advances in many areas including the arts, science,
business, and home.In the area of
arts, museums can now scan and print an exact replica of a historic pieces such
as a Stradivarius violin[12]
and let museum goers not only see but feel how a Stradivarius might feel in
their hands.Another potential use
is if an artist wants to make a sculpture of a thinking woman to complement the
thinking man, the artist can work off of a 3D scan of the original sculpture.

In
science, 3D printing has provided doctors a better way to customize
body-contacting devices and structures.[13]Scanning and work off a patient’s
original body part is the best way to customize a replacement body part.3D scanning and printing has helped
doctors produce hearing aids, prosthetics, and hip-replacement orthopedic
implants.[14]In fact, thousands of dental fillings
and bridges are currently printed daily.[15]

In
business, the industrial advantages are plentiful.[16]Such advantages include rapid design
prototyping, cost-effective manufacturing of customized one-off items,
production of designs that usually will not be feasible with traditional
technologies, and efficient use of materials.[17]
3D printing simplifies the manufacturing process by
building pre-assembled systems.[18]It also allows for varied product
manufacturing without re-equipping factories with new machinery, which greatly
reduces costs and production time.[19]

Finally, at home, 3D printing allows for do-it yourself (DIY)
enthusiasts to print and create a multitude of products.[20]The DIY community is a broad collection of people engaged in the creation, modification or repair of objects without
the aid of paid professionals.²[21]For example, if a stroller handle
is broken, instead of sending the stroller into the manufacturer to get it
fixed, a DIYer could simply find a 3D scan of the handle, print it with a 3D
printer, and assemble the printed part himself.[22]A DIYer who can’t seem to find the right
pair of shoes can print customized shoes that fit exactly with the right size,
style, and color.[23]

b.
Challenges of 3D printing

The
advantages of 3D printing seem limitless, and as technology progresses, 3D
printer technology is beginning to gradually look like the Star-trek
replicator.Achieving advances in
technology that parallel the star-trek fantasy, however, has its challenges.Currently, there are limitations on
print speed, size, and type of materials used just to name a few.[24]Therefore, although 3D printing
technology has been available since the 1980’s,[25]
its uses are limited because of the technological limitations.In addition, there are cost limitations
that prevents the widespread use of 3D printing.

These
challenges, however, will be gradually overcome throughout the years.Technology is rapidly improving, as
evidenced by the fact that more types of materials can be used for printing
compared to the 1980’s.Costs are
also decreasing.In the 1990’s 3D
printers cost about $15,000 to $25,000, but now, home versions of 3D printers
can be purchased from about $500 to $2,000.[26]Also, retailers are recognizing the
lowered cost and growing market for 3D printing.For example, Staples is beginning to
offer 3D printing services as part of their copy services.[27]

As
the limitations are gradually overcome by improving technologies, the use of 3D
scanning and printing will become increasingly widespread.Similar to what occurred with the
development of the internet and digital media, widespread use of 3D printing
will raise complex intellectual property issues.The current effects of 3D printing on
intellectual property law are not as dramatic as what occurred with digital
media, 3D printing will prove to be the next disruptive technology.

III.
Historical Examples of Disruptive Inventions and Their Effect on Intellectual
Property Law

Taking
a step back in history there are several inventions that were considered
disruptive inventions.The term
“disruptive invention” was originally coined to refer to new inventions that
disrupt the market for old technologies.[28]This disruption, however, extends beyond
economic markets to the sphere of intellectual property law.[29]The law as it currently exists
cannot address all the potential issues that 3D printing users may face in the
future.[30]

The
printing press is an example of a disruptive invention that dramatically
changed the concept of intellectual property law.[31]Prior to inventing the printing press,
books were extremely expensive to make and very few people had access to books
to read.[32]After its invention, the average citizen
would have access to books, which was beyond imagination at that time.[33]This invention led to the passage of
copyrights and other laws to manage published materials.[34]

More
recently, the combination of the creation of digital media, computer software,
personal computers, and the internet have been extremely disruptive to
copyright law.First, there was
much debate on whether computer software is copyrightable because of how
similar software code is to a procedure or process.[35]This debate was recently resolved when
congress decided to statutorily protect computer programs as literary works
despite it being almost unreadable to humans.[36]

The
advent of digital media became a big headache for the music industry because
improved technologies meant improved ways of piracy.While suing individual downloaders
became impractical, internet service providers (ISP) and web hosts did not want
to be at fault when they are not aware of the piracy occurring on their server
systems.The next few sections will
describe the difficulty of fitting these disruptive technologies with existing
laws and how 3D printing will also affect existing laws.

IV. 3D
Printing Technology and its Effects on Intellectual Property Law

The
goal of intellectual property law is to balance between incentivizing inventors
and stifling creativity.Disruptive
inventions break this balance and create tension between both sides of the
equation.The laws which govern
current intellectual property needs to keep up with new technological
developments to re-create equilibrium.

3D
printing technology does not fit neatly into any of the pre-defined patent or
copyright categories because the process of creating a 3D object is governed by
both.A 3D CAD file is intangible
and generally cannot be governed by patent law while some 3D printed useful
objects such as a lamp cannot be copyrighted.Since 3D printing technology is not
solely governed by one category or another, lawmakers should approach the
incompatibilities of the technology and current law with a holistic view of the
existing legal doctrines and perhaps even create new laws to cover the potholes
of the current law.This paper will
first identify the logistical problems from managing potential 3D printing piracy.Second, this paper will identify the
incompatibility of 3D printing technology with the current law.Lastly, this paper will identify
possible solutions.Lessons from historical
disruptive inventions will be drawn upon throughout this paper to help guide
future 3D printing laws.

a.
Logistical Problems for Managing Potential 3D Printing Piracy

A
set of logistical problems contribute to the problem of distributing pirated digital
information.First, it has to be accepted
that piracy will not end despite any laws or government regulations.Second, there is a lack of legitimate
means available to obtain digital information.Lastly, Digital Rights Management (DRM)
systems placed on protected electronic data generally do not work.

“If
there is a will there is a way,” so goes the common saying.The truth behind that saying is telling
by how quickly protected copyrighted material can be hacked and uploaded on the
internet despite legal and technological restrictions.For example, despite government orders
for internet service providers to block access to certain peer to peer (P2P)
internet sites such as Pirate Bay, users can circumvent the block in less than
60 seconds.[37]Illegal copies of movies are available
online before they are distributed as DVDs and sometimes even before they are
in movie theaters.The advent of 3D
printing technology not only allows for widespread illegal distribution of
copyrighted works, but also illegal distribution of patented objects.

Partially
why consumers turn to illegitimate means is because of the lack of legitimate
means.This was the problem with
digital music and is a foreseeable problem for 3D printing files.Prior to the launch of iTunes and other
legitimate music downloading sites, consumers who wanted digital music would
have to buy an artist’s compact disc (CD) and use questionably legitimate
software to copy the music off of the CD and convert it into a MP3 so that it
can be read by a digital music player.Sometimes the CD contains songs that consumers do not want.The inconvenience and inefficiency drove
many consumers to download illegal files where the song would already be in MP3
format and the consumer could choose and pick which songs he would like to
keep.

It
was so hard for the music industry to embrace a legitimate digital music
distribution model was because music labels could not agree on a standardized
way of licensing digital music.[38]Even today, there is a lack of a
comprehensive clearinghouse for mechanical licenses for services to stream
music online.[39]There is no centralized database or
location where potential licensees can contact license holders to use
compositions.[40]This becomes costly for potential
licensees because not only does the licensee have to locate the license
holders, but the potential licensee has to also separately negotiate with each
publisher for each musical composition.Similarly, there may be multiple levels of copyright and patent
ownership involved in a 3D print.[41]There may be copyright protection over
the CAD file or patents on the object printed. [42]Therefore, there could be similar challenges
for those who want to obtain the necessary rights from the IP right holders in
order to 3D print.[43]

Ironically,
the music industry was not the first to come up with a legitimate means of
distributing digital music.Apple
Computer prevails as the best-known success story in the legitimate digital
music space.[44]Apple’s success in controlling digital
music happened almost completely without permission and backing of music
labels.[45]In 2001, Apple came out with the iPod,
which was a device that enabled the easy portability of digital music.[46]In 2003, Apple launched iTunes, and its
success essentially forced record labels to license their music to Apple for
sale under Apple’s paid download scheme because the alternative would be
continued revenue loss to digital piracy.[47]

Apple’s
success, however, was not without limits because the DRM system placed on the
iTunes files resulted in backlash.[48]The DRM system led to legal action
across Europe to Apple’s competition such as Amazon.com offering DRM-free
files.[49]Such pressures have led Apple to work
with record labels to open DRM protection.[50]

Attempts
by Apple to place DRM systems on digital music files can indicate that analogous
DRM-like limits on 3D printing will probably also not work.In general, DRM is a system that
prevents digital media consumers from redistributing the digital information.[51]History shows that DRM systems are
unlikely to work very long.[52]Hackers can crack DRM systems within a
few weeks.[53]Furthermore, media distributors usually
self-enforce DRM systems, which means distributors can reduce the rights of
consumers to any degree and can override basic consumer freedoms.[54]Adding to the inconvenience, each
distributor’s DRM system is different and can be incompatible with certain
media players.[55]The combination of a lack of consumer
freedom and compatibly issues could push consumers to continue to rely on
illegitimate services.[56]Therefore, content owners who use DRM
systems might win the battle but lose the war.

b.
Problems with the Current Intellectual Property Law

The
fact that both copyright and patent law governs 3D printing makes it hard to
enforce intellectual property protection.As previously mentioned, lawmakers should approach the incompatibilities
of the technology and current law with a holistic view of both existing
copyright and patent doctrines.The
following portion will address pitfalls of current law in the context of 3D
printing.

i.
Uncertainty in Distributing Liability

There
is always uncertainty when creating new areas law.In general, it is important to quickly
identify and address these uncertainties because many businesses will not be
willing to invest in a product unless they know the legal risks associated with
it.What complicates the 3D
printing process is that there are multiple parties involved in the process of a
3D print.

Uncertainty
starts with who to blame when a copyrighted or patented object is illegally
printed.Would it be the person who
scans the object?The person who
uploads the file? The web service that allows for downloading?The person who downloads the file?The person who prints the file?What if someone adds or modifies the
original design?What about the
bloggers or forum commentators who link readers to illegal download sites?Different people or entities could
perform each step in the 3D printing process.Even if liability is attributed to all
of them, it is probably not practical to go after everyone. Who should carry the burden?Such an arbitrary distribution of
liability could result in disincentives in improving or using the technology
and stifle creativity.

Currently,
there are laws that clearly protect certain groups from liability but not
others.The Digital Media Copyright
Act (DMCA) is a body of statutory law that is aimed at addressing online copyright
concerns.[57]This law reflects an instance where
technological changes influenced Congress to step in to codify the judicial
trends.[58]The DMCA is often described as a “sword”
and a “shield.”[59]The DMCA acts as a “sword” for copyright
owners to protect their copyright, and is used as a “shield” by ISPs to avoid liability
from certain activities.[60]

Although
this law shields ISPs from copyright infringement if the ISP is unaware of
their user’s infringement,[61]
this law does not protect other innocent parties.For example, in the dispute over a 3D
printed version of the Penrose Triangle the Dutch designer Ulrich Schwanitz
posted a video of his 3D model of the Penrose Triangle on YouTube.[62]Within a few weeks Artur Tchoukanov,
managed to reverse-engineer the object by watching the YouTube video and posted
the schematic online.[63]Schwaintz lodged the first DMCA takedown
request against Tchoukanov with respect to 3D printing.[64]Ultimately, Schwaniz dropped the
copyright claim because it would have been questionable whether he could obtain
a copyright on the Penrose triangle, a public domain optical illusion.Should Tchoukanov be liable for
recreating an object that is questionably copyrightable?How would Tchoukanov know that the
creation is copyrightable or copyrighted?What if Tchoukanov never saw Schwaniz’s YouTube video or posting and
decides to come up with a Penrose Triangle schematic independently?Premature regulation could potentially oppress
innovation and entrepreneurship in the 3D printing community.[65]

ii.
Lawsuit Backlash

Even
if the liability can be properly distributed, there may be backlash from the
community if there are mass litigation campaigns.Taking a chapter from the music
industry, the Recording Industry Association of America (RIAA) initially tried
to stop piracy by suing Napster, a peer to peer (P2P) network.[66]Although RIAA won the suit against
Napster, other P2P sites quickly became available[67]
and new file sharing concepts were developed.For example, BitTorrent, a software
system that divides large files into smaller pieces for download from multiple
peers, involves thousands of people in a download makes it more difficult to police.[68]

When
the RIAA realized their battle against P2P networks did not work effectively,
it turned to launching a mass litigation campaign against individuals who were
downloading and sharing MP3 files.[69]As a result of this campaign, consumers
became even more indifferent to the label’s woes and saw them as the “big
corporate enemy”[70]
trying to get grandmothers in trouble.This resulted in a terrible public relations mess that was largely
ineffective.[71]Currently, online P2P networks remain
the primary source of digital music distribution online.[72]

iii.
Incompatibility of Current Copyright Law and 3D Printing Technology

Copyright
protects original, work of authorship, fixed in a tangible medium “form which
they can be perceived, reproduced or otherwise communicated.”[73]Currently, most of the publically
available 3D designs are decorations, games, or pop culture references.[74]As such, immediate IP concerns for 3D
printing is limited to copyright infringement for both the underlying CAD files
and the object itself.[75]There are, however, limitations to
copyrighting CAD files.

1.
Originality

Copyright
infringement requires proof of copying; therefore, independent creation,
coincidence, or development from a prior common source are all defenses to
copyright infringement.[76]The originality doctrine according to
the Feist test means that 1) the work
was independently created by the author, and 2) it possesses some degree of
originality.[77]The copyright holder’s typical burden is
to prove that the accused infringer had access to the copyrighted work and that
the work is substantially similar to the work.[78]

Such
a simple test, however, can easily become confusing with 3D printing.Continuing the Penrose Triangle example,
Tchoukanov “copied” Schwanitz’s Penrose Triangle but did not have access to his
work.Tchoukanov was merely
watching a YouTube video, which is within the realm of public domain.Derivative works of Tchoukanov’s work
would also not be infringing if Tchoukanov’s work was based on something within
the public domain and because Tchoukanov released his CAD file online.[79]

2.
Authorship

Furthermore,
traditional notions of authorship are strained when machines like the CAD
software program or the 3D printer does much of the creating.[80]Much like an automatic spellchecker,
there are mechanisms in most software programs that help guide users.In Meshwerks,
Inc. v. Toyota Motor Sales U.S.A., Inc. the Tenth Circuit ruled that a
wire-frame digital model of a Toyota car, created by humans with the aid of
computers, lacked originality, even though human expertise and skill is needed
to create the model in a realistic manner and with a 3D appearance.[81]As software becomes more intelligent, 3D
creation aided by such software may no longer be copyright protected.

3.
Excluding “Useful Articles”

Useful
articles are not copyrightable.A
useful article is defined as “an article having an intrinsic utilitarian
function that is not merely to portray the appearance of the article or to
convey information.”[82]For example, the portion of a lamp that
is used to illuminate the room would be a useful article, but a statute of a
dancing figure that forms the base of the lamp[83]
or the Penrose Triangle[84]
would not be considered useful.Therefore, it can be especially burdensome to identify portions of a 3D
printed object or a CAD schematic as not useful to be eligible for copyright
protection.[85]

4.
Idea versus Expression

Copyright
protects expressions but not ideas, procedures, processes, or method of
operation.[86]For example, if an author writes an
instructional book to teach a “useful art” a copyright may protect the exact
combination of words written in the book, but not the underlying concepts
taught.[87]Similarly, copyrighting a software
program would protect the code supporting the program but probably will not
protect the idea of how the program would interact with the user.In Lotus
Development
Corp. v. Borland International, Inc.,[88]
the court held that the macros and menu trees of the Lotus
1-2-3 spreadsheet program was not copyrightable because it was a part of the
method of operation.[89]Furthermore, in Woods v. Resnik,[90]
the Court held that Resnik, who came up with the software idea, did not own the
software because he failed to show that he made any independent copyrightable
contribution to the software.[91]

In
the context of 3D printing, copyright is likely only useful to protect an
object’s form, but not function.[92]The 3D CAD file and the form of the
object produced are probably the only copyrightable portions of a 3D print
process.CAD files, however, may or
may not be copyrightable because it depends on whether a court treats it more
like a computer program or a blueprint.[93]

Again,
looking at history, there was much debate on whether a computer software is
copyrightable.[94]Software is generally categorized as an
operating system or application program.[95]Operating system perform a variety of
internal computer operations.Application systems perform specific tasks and produce specific output
for the user.[96]It was previously argued that operating systems
are uncopyrightable because it is a “method” or “process” and therefore merely
an idea.[97]In the landmark case Apple Computer, Inc. v. Franklin Computer
Corp.[98]
the Court held that an operating system and application system are equally
copyright protectable because both instruct computers to execute certain
actions.[99]The instructions themselves are
copyrightable because they have sufficient creativity separable from the
underlying process.[100]

3D
CAD files are similar to expressions in computer programs because it breaks
down the 3D structure of an object and instructs 3D printers to execute certain
actions.[101]On the other hand, 3D CAD files are
basically just triangular representations of a 3D object.[102]They merely act as a blueprint or
“method” for other software to utilize[103]
and may not contain enough creativity as the Apple Court required.

5.
DMCA Takedown Procedure Abuse

DMCA
provides a safe harbor provision for content hosts who unknowingly host
infringing copyright material.[104]The takedown concept is that a copyright
owner can have infringing material taken down by sending notice to a content
host.[105]Once the content host receives notice of
the infringement, he must remove the content and promptly notify the owner of
the material.[106]The accused infringer can file a
counter-notification for the host to replace or restore access to the content.[107]

This
procedure, however, has been criticized for making it too easy for distributors
to simply remove content as a protective measure.[108]One study on DMCA found that 31% of
takedown notices were flawed because of uncertain rights particularly relating
to fair use.[109]Many of the takedown requests were
submitted by competitors.[110]

The
fair use doctrine is often used against DMCA takedown requests.[111]The fair use doctrine is a defense
against copyright infringement.[112]The doctrine allows creative works to be
used by others for certain purposes that are socially beneficial.[113]The idea is that the doctrine helps
maintain the proper balance between an individual’s property rights and social
benefits that result from a free flow of information.[114]

An
example of a flawed takedown request relating to fair use occurred in the case Lenz v. Universal
Music,[115]
where a mother’s YouTube video of her child singing and dancing to a Prince
song was removed through the DMCA process.[116]The mother filed a counter-notification,
and sued the copyright owner for misrepresenting its claim for infringement under
the Act.[117]The court ruled in favor of the mother
and held that a copyright owner must make a good faith consideration of fair
use.[118]

In
the context of 3D printing, the Penrose Triangle case is another example of a
potentially flawed takedown request.There was controversy over whether Schwanitz’s
takedown request was made in good faith consideration.He probably did not have a copyright
claim to the Penrose design because it was based on a public domain optical
illusion.[119]In fact, the content host, Shapeways,
responded to the incident by warning that premature regulation could discourage
innovation in the 3D printing community.[120]

iv.
Current Patent Law and 3D Printing Technology Problems

3D
printing can copy objects that are useful and potentially patentable or
patented.[121]Therefore, if widely used, 3D printing
technology has the potential to generate wide scale patent infringement over
the internet.[122]A patent right is a right to exclude
others from copying.[123]The theory behind patent law is that inventions
are public goods that are costly to make and difficult to control.Without patent protection, inventors
will not have sufficient incentive to invest, create, and develop new products.To properly incentivize inventors, it is
important that patents can be meaningfully enforced against infringers.[124]Wide production of patent infringing 3D
printed objects can render patent protection meaningless.

1.CAD files’ Incompatibility with Patent
Liability

As
previously mentioned, many parties could be involved in a patent-infringing 3D
print.Intuition tells us that the
best way to stop infringement would be to stop distributing infringing CAD
files over the internet.CAD files,
however, are incompatible with patent infringement liability.[125]

To
understand the incompatibility, a general understanding of patent infringement
is required.Patent infringement is
generally defined by 35 U.S.C. § 271.[126]Subsection (a) defines the actions that
constitute direct infringement and subsections (b) and (c) define indirect
infringement.Direct infringement
occurs when the infringer “makes, uses, offers to sell, or sells any patented
invention.”[127]Indirect infringement encompasses both
induced infringement (subsection (b)) and contributory infringement (subsection
(c)).[128]Induced infringement is in essence
aiding and abetting another’s direct infringement and requires a showing that
the accused had a specific intent to cause another to infringe upon the patent.[129]Contributory infringement may include
either the sale of a component of a patented machine, manufacture, combination
or composition (including a component used in a claimed system), or sale of a
material or apparatus for use in the practicing patented process.[130]

In
regards to direct infringement, once an object is patented, 3D printed copies
of the object would infringe upon the patent whether or not the copier knows
about the patent.[131]However, possessing or distributing the
CAD files does not amount to “making”[132]
or even “using”[133]
the product.A CAD file distributor,
without actually printing the object would not be “making” the object much less
be able to “use” it.Furthermore,
product that does not physically exist yet cannot be “sold” under the statute
because infringement is uncertain or speculative.[134]Selling a CAD file, therefore, does not
amount to selling the patented invention.[135]

It
would be difficult for patent holders to enforce patent rights against those who
physically print the object because it is similar to RIAA’s mass litigation
campaign against individuals.Such
a litigation campaign is even less likely to work in the case of 3D printing
because there isn’t a specific association backing the distribution of all 3D
print objects that is analogous to the RIAA.If litigation were to occur, it would
probably be within the boundaries of specific industry groups, making the
enforcement of patent infringement even more complicated.

In
regards to indirect infringement, mere distribution of CAD files does not
amount to induced infringement under § 271(b).[136]Induced infringement requires intent and
occurs only when one encourages another to engage in infringing activity with
knowledge that induced acts constitute patent infringement.[137]Although induced infringement includes
willful blindness where 1) the defendant subjectively believes that there is a
high probability that a fact exists and 2) the defendant took deliberate
actions to avoid learning the fact,[138]
it can be very hard to prove.

Furthermore,
it is fairly straightforward that CAD file distributors would also not be
liable for contributory infringement under § 271(c) because CAD files are not
“components” of a patented product.[139]A component of a patented product would
have to be a physical part of the invention.[140]A CAD file is merely a digital
representation of the product, and similar to how the CAD file itself does not
make, use, or sell the product, a CAD file cannot be a component of the
product.

Lastly,
the printed matter doctrine prevents CAD files from being patented.[141]The printed matter doctrine prohibits
patenting mere recorded information that has no relationship to a physical
structure because it is abstract and outside the scope of 35 U.S.C. §101.[142]The CAD file and instructions for making
the 3D object, therefore, probably cannot be patented.[143]

2. No Bright Line
between Repair and Reconstruction

As
previously mentioned, an advantage of 3D printing is that consumers are able to
repair broken parts of an item easily by printing a new part.By 3D printing replacement parts, consumers
could potentially save money that would have otherwise been spent on repairs.[144]Patent holders may not be able to
capture the normal profit from repairs and wish to strictly enforce their
rights by suing consumers whose repairs amount to replacement.[145]

Under
patent law, the purchaser of a patented object acquires the right to use and
repair the object.[146]The purchaser, however, does not have
the right to reproduce or reconstruct a patented item or use unapproved parts
to repair or reconstruct the item.[147]Specifically, consumers cannot
repair a patented object when it is completely spent or no longer usable.[148]The consumer is supposed to
purchase a new product at that point to continue its use.[149]If the consumer repairs the product when
it is spent, then it amounts to patent infringement as it is essentially
reconstructed.[150]

The
need to distinguish repair and reconstruction becomes even more relevant when
consumers use 3D printing to replace multiple parts of an object simultaneously
because it is hard to identify when the object is actually spent.[151]

Current
common law does not draw a distinguishable line between repair and replacement.[152]Different courts came up with different
approaches.[153]Such approaches include measuring the
replacement part’s durability, or identifying whether the object was never
voluntarily or completely destroyed, or sound common sense or intelligent
judgment.[154]These different approaches can
potentially be arbitrary and result in different outcomes.[155]Consumers cannot be certain about
their liability.[156]As previously mentioned, such legal
uncertainty can be stifling for innovation and creation of commons.

c.Proposed Solutions to Logistical and
Legal Problems of 3D Printing

The
balance between preserving commons and encouraging innovation is important to
keep in mind when proposing remedies to existing problems.Furthermore, because patent or copyright
law does not exclusively govern 3D printing technology, remedies should span
both areas of IP law and engage in new legal concepts.

i.
Remedies to Logistical Piracy Problems for 3D Printing

Piracy will most likely not end
regardless of how many lawsuits occur, statues created, DRM systems
implemented, or P2P networks shut down.In fact, piracy has always existed in some form throughout history.What lawmakers should be thinking about
is not how to stop piracy altogether but rather how to manage it so that there
is a balance between incentivizing inventors and stifling creativity.

One
method to combat piracy is to implement an easy to use interface for consumers
to access legitimate 3D prints.The
factors that drive people’s behavior are based on availability and price.[157]If downloading something off of a
BitTorrent website is faster and easier to use than jumping through the hoops
of trying to rip music off of a CD, then the consumer would naturally pirate
the music.A part of iTune’s
success is that it made it easy for consumers to buy songs at a relatively
cheap price at ninety-nine cents a song.For many consumers, parting with ninety-nine cents is worth more to them
than trying to scour the internet to find the right link to download the song
that might be virus infected and bad quality.Although music piracy continues to this
day, purchases of legitimate content has also risen significantly.[158]

Currently,
there are sites like Shapeways which allows consumers to send in 3D print
designs to have it custom printed.[159]Shapeways also makes available a wide
assortment of user-designed objects for printing,[160]
but consumers would not know whether the designs printed or available for print
on Shapeways is patent or copyright protected.To ensure consumers can print legitimate
3D prints, there needs to be an easy to use website that guarantees legitimate
3D prints.

For
such a website to exist, there also needs to be a licensing mechanism in place
such as a clearinghouse specific for 3D printing.The clearinghouse could help index 3D
printed objects into general categories and act as a central database for those
who want to obtain licenses for 3D prints.This can lower costs for those websites that want to establish
legitimate means for 3D print consumers.The clearinghouse can also solve the issue of preserving commons.It can actively solicit user-generated
designs and index them to ensure they are incorporated into the commons so that
no future patent application can remove it from the commons.[161]

With
a streamlined means of obtaining licensed material, the market can set the path
for websites that service 3D print objects and the objects themselves –
with good CAD designs in high demand and bad services die due to the lack of
popularity.[162]People would be more willing to pay to
get quality designs instead of low quality pirated designs.[163]

ii.
Remedies to Intellectual Property Law Problems

Legal
uncertainty comes with all disruptive inventions, especially when such
inventions blur the pre-defined legal categories such as patent and
copyright.3D printing makes
liability distribution complicated because it not only spans different areas of
law but also involves multiple parties.

Taking
a look at the multiple parties involved in making a 3D print, the most
efficient way for a aggrieved party to be compensated for their loss from
infringement would be to go after the “deep pockets.” These would be the ISPs or successful P2P
networks.This is what that RIAA
did initially for digital music piracy, but as history shows, this method did
not work very well.ISPs are now
protected by the DMCA and if they do become involved in lawsuits they have much
political clout.Quashing P2P
websites is just as hard because the downfall of Napster just meant the rise of
Limewire or other P2P networks.

IP
holders should shift their focus from being compensated via lawsuits, to trying
to manage laws surrounding piracy before infringers goes to court.A clearinghouse or similar organization
can help implement an alert system for copyright or patent infringement.This represents a friendlier system than
that prescribed by the DMCA because this is not enforced by statute and will
alert consumers who may not know that the files they are sharing have IP
protection.

iii.Copyright and Patent Law Examined
together

There
are weaknesses to both copyright and patent law in the context of 3D
printing.A holistic view of the
problems would be helpful to decipher how to deal with them.The problems identified in copyright law
include: proof of originality, authorship, excluding “useful articles,” idea
versus expression dichotomy, and abuse of DMCA takedown procedures.The problems identified in patent law are
the incompatibility of CAD files with patent law and defining repair and
replacement.Taken together, much
of the problems of copyright law can be supplanted by patent law and vice
versa.Therefore, a doctrine with
hybrid copyright and patent law may be a solution.

1.
Originality Resolution

Copyright
protection requires proof of copying, while patent protection does not require
proof.Assuming Schwanitz’s Penrose
Triangle can be patented (although in this case it cannot be because it is not
a “useful” article), then the dispute about whether Tchoukanov infringed on
Schwanitz’s intellectual property rights can be easily resolved because
Tchoukanov would be liable under patent liability.Keeping in mind the goal of IP
protection, which is striking a balance between expanding commons and
encouraging innovation, perhaps Tchoukanov should not be liable?After all, Schwanitz did not give
Tchoukanov his CAD file for him to copy.Tchoukanov took time to watch and re-watch the YouTube video that
Schwanitz posted online and had to put labor into figuring it out.

John
Locke’s labor mixing principles could perhaps be applied here.Locke’s theory is that when a person
mixes his labor with nature, the person removes it from the common state and
acquires right of ownership.[164]Schwanitz’s design was on YouTube, a
part of public domain.Tchoukanov
had put effort into deciphering what Schwanitz did and therefore mixed his
labor with something in the public domain.Tchoukanov should therefore not be liable to Schwanitz.Under this theory, if Schwanitz posted
his CAD file online and notified the public of his IP rights over the design,
then Tchoukanov would be liable because Tchoukanov would have directly copied
Schwanitz.

Another
doctrine to encourage invention would be an “innocent independent inventor”
doctrine.[165]Such a doctrine will provide that direct
infringement liability will not attach if the infringer 1) did not have actual
knowledge of the patent, and 2) was not making commercial use of the patented
invention.[166]To complement this doctrine lawmakers
should emphasize the importance of notifying infringers of their infringement.[167]Establishing an alert system, as
previously mentioned, would put infringers on notice. Therefore, if the
infringers do not take down their designs they would be liable to the patent
holder for indirect infringement.

2.
Authorship Resolution

With
the rise of computer-aided design it is hard to decipher whether a design is attributed
to the human author.This is more
of a copyright issue as opposed to a patent issue because the USPTO generally
examines for novelty and nonobviousness in a patent application.Having a centralized database for all 3D
prints would probably be helpful because such a database can be used to
identify the original design.Many
times, the problem is that it is hard to decipher the “prior art.”

Creating
a new doctrine to supplant the database would also help with this problem.Instead of rigidly defining a 3D printed
object as having copyright or patent rights, another category can be created
for “transformative” objects.Such
transformative objects would need to pass a novelty or nonobviousness test. Specifically, it would be helpful in
deciphering authorship if a 3D print design passes the question about whether a
person of ordinary skill of the art would be able to come up with the design.

3.
Excluding “Useful Articles” Resolution

Creating
a transformative objects doctrine would also be helpful for solving the useful
articles problem.Although there is
no copyright protection for useful articles, there is patent protection.The hypothetical protection for such
objects would be similar to patent protection.The protection would not only include
protection of an object in its physical state, but also to the object’s
non-physical state (as in a CAD file).In this hypothetical doctrine, copying an object from a non-physical
state would be considered infringement so long as it is proven that the CAD
file can be physically formed.Therefore, the useful article doctrine would not apply in this type of
hybrid protection and would not create a problem.

4.
Idea versus Expression Resolution

The
idea versus expression dichotomy is harder to address because under copyright
protection, an idea is not copyrightable, an idea can be patented so long as it
can be physically manifested.In
our hypothetical doctrine, CAD files should be treated more like computer
software to take advantage of some IP protection.If CAD files were treated more like
blueprints and have no protection, then there would be no point of having any
IP protection over physical objects at all.Imagine in the far future where any
physical object can be printed by 3D printers and the usual way of selling an
object is by selling the CAD file.If CAD files are not protected in some way, then the CAD file
distributor who is making most of the money from the sale would not be subject
to any IP liability.

5.
Abuse of DMCA Takedown Procedures Resolution

DMCA
is incomplete IP protection for 3D printed object because 3D printed objects
also need patent protection.An
idea would be to extend DMCA protection to patents.The concept would again require an alert
system where the IP right holder of a transformative object can alert infringers
of their IP right and require them to take down any infringing material.The notice should contain information
necessary to make a determination as to the legitimacy of the infringement and
allegation.[168]Website hosts and infringers who comply
with the requirements of taking down the design file would be insulated from
infringement liability.

There
is still potential for abusing takedown procedures but again, if there is a
good indexing system in place, the likelihood of flawed notices will decrease.Furthermore, if a hybrid-type of law for
3D printing is established, then there would be more legal certainty and
takedown notices from uncertain rights would be greatly diminished or
eliminated.

6.
Incompatibility of 3D CAD Files with Patent Rights Resolution

Under
the current law, transfers of CAD files are subject to very little or no patent
liability because a CAD file transfer is not a transfer of a physical
manifestation of the object.The
most likely way for an infringer to be liable for distributing a CAD files
would be based on induced infringement under § 271 (b).A strong infringement alert system would
be helpful here because once an infringer knows that his CAD file infringes
upon another IP rights, then the infringer could be liable for induced
infringement.

Another
way of combating the incompatibility would again be to use a transformative
objects doctrine. Where copying an
object from a CAD file, or non-physical state, would be considered infringement
so long as it is proven that the CAD file can be physically formed.That way, infringing CAD file
distributors would not be able to get away from liability just because the
transfer is not a physical manifestation of the object.

7.
Distinguishing between Repair and Reconstruction

The
current problem with repair versus reconstruction is that it is hard to
distinguish whether repairing certain parts would amount to
reconstruction.Currently, the
accused infringer has the burden to prove that he did not infringe on a patent.[169]One way of managing such infringements
would be to shift the burden of proof to the patent holder from the accused
infringer.[170]The patent holder should have access to
more knowledge and resources than the accused because the patent holder is most
likely a person having ordinary skill of the art whereas the accused would
probably merely be a consumer.

Another
solution is to impose restrictions on printing component parts.[171]This solution, however, is impractical
because component parts are not necessarily patented protected.Courts have repeatedly denied extending
patent protection over individual, unpatented parts of a combination because of
antitrust concerns.[172]In the far future, this solution is
probably also impractical because people in the future might buy their objects as
CAD files and print what they need.An item would never break because people can just keep re-printing
broken parts.IP right holders
should therefore account for the possibility of not being able to capture
revenue from broken parts and properly price the items available for print.

IV.
Conclusion

The
days of taking star trek’s replicator home is not far away.3D printing technology is much improved
from the original invention in the 1980’s.The cost has also dramatically reduced and consumers can now own
personal 3D printers.History has
taught us that innovative new technologies have the potential for disrupting
society and its laws.Technologies
that make things faster and easier for consumers also allows for faster and
easier piracy.

There
is probably no solution to completely stop piracy, but there are processes that
society can implement to manage it.Establishing a clearinghouse to properly manage, organize, and index 3D
prints would probably be a first step for managing piracy because once there is
a database of legitimate prints, it would be easier for legitimate websites to
be established.As more legitimate
websites are available, consumers would let the market set which 3D prints are
more desirable and what web services would be better.Competition would drive the web services
to become more easy to use, and consumers would naturally flock to the easy to
use websites and stop scouring the internet for hidden links to pirated
versions.

Since
copyright or patent law cannot exclusively govern the 3D printing process, new
legal doctrines can be established.Specifically, such doctrines will combine aspects of both copyright and
patent law to govern different stages of a 3D print process.With these logistical and legal changes,
the balance between expanding commons and encouraging innovation could possibly
reach equilibrium, until the next disruptive invention emerges.